Ex Parte Meisel

Patent Trials and Appeals Board

Apr 24, 2019

13539930 - (D) (P.T.A.B. Apr. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/539,930 07/02/2012
25006 7590 04/26/2019
DINSMORE & SHOHL LLP
900 Wilshire Drive
Suite 300
TROY, MI 48084
FIRST NAMED INVENTOR
David Meisel
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
MIA-12103/36 4143
EXAMINER
CHANG, CHING
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
04/26/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
MichiganPatTM@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID MEISEL
Appeal2017-008452
Application 13/539,930
Technology Center 3700
Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 1, 2, and 7. 1 An oral hearing was held
on March 14, 2019, and a transcript of that hearing is included in the record
("Transcript"). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Claims 4---6 are withdrawn. Br. 1 O; Final Act. 1.
Appeal2017-008452
Application 13/539,930
CLAIMED SUBJECT MATTER
Claims 1 and 7 are independent. Claim 2 depends from claim 1.
Claims 1 and 7 are reproduced below:
1. A head assembly for an internal combustion engine with
an electromagnetic valve actuation system, comprising:
a head having an intake or exhaust passage defined
therein;
a valve disposed in the intake or exhaust passage and
operable to selectively open and close the passage;
the head having a cooling passage defined therein for
passage of a cooling fluid; and
an electromagnetic actuator having a piston in
mechanical communication with the valve and a coil having a
coil wire in direct contact with the cooling fluid from the
cooling passage;
wherein the electromagnetic actuator is operable to move
the valve between a closed and an open position.
7. A method of operating an intake valve comprising:
providing an electromagnetic actuation system
compnsmg:
a head having an intake or exhaust passage defined
therein;
a valve disposed in the intake or exhaust passage
and operable to selectively open and close the passage;
the head having a cooling passage defined therein
for passage of a cooling fluid; and
an electromagnetic actuator having a piston in
mechanical communication with the valve and a coil having a
coil wire in direct contact with the cooling fluid from the
cooling passage;
wherein the electromagnetic actuator is operable to move
the valve between a closed and an open position;
2
Appeal2017-008452
Application 13/539,930
defining an intake period during which an intake mixture
is provided to a combustion cylinder; and
using the electromagnetic actuator to open and close the
valve multiple times during the intake period.
REJECTIONS 2
1. Claim 1 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Longstaff (US 3,882,833, issued May 13, 1975) and Tobias (US
6,972,655 B2, issued Dec. 6, 2005).
2. Claim 2 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Longstaff, Tobias, and D' Alpaos (US 6,798,636 B2, issued Sep. 28,
2004).
3. Claim 7 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Longstaff, Tobias, and Salber (US 6,182,621 Bl, issued Feb. 6, 2001).
4. Claim 1 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Bauer (US 6,318,312 Bl, issued Nov. 20, 2001) and Tobias.
5. Claim 2 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Bauer, Tobias, and D' Alpaos.
6. Claim 7 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Bauer, Tobias, and Salber.
OPINION
Longstaff Grounds
Claims 1 and 7 each require a "head having a cooling passage defined
therein for passage of a cooling fluid" and "an electromagnetic actuator ...
2 In this Decision, we refer to the Final Office Action, mailed Feb. 4, 2016
("Final Act."); Appeal Brief, filed Jun. 30, 2016 ("Br."); and the Examiner's
Answer, mailed Feb. 3, 2017 ("Ans."). No Reply Brief was filed.
3
Appeal2017-008452
Application 13/539,930
having a coil wire in direct contact with the cooling fluid from the cooling
passage." Claim 2 depends from claim 1. We read the "head" recited in the
claims as a cylinder head of the engine. 3
The Examiner finds that Longstaff teaches a "head having a cooling
passage (including 44, 45)," but "fails to disclose the ... coil having a coil
wire in direct contact with the cooling fluid from the cooling passage."
Final Act. 4. The Examiner finds that "Tobias ... teaches that it is
conventional in the cooled solenoid art, to have utilized a cooled solenoid
(10) with coil wires (25) in direct contact with a cooling fluid from a cooling
passage (27, 28, 30, 15, 20)." Id.
Appellant responds that Longstaff "fail[ s] to provide a head with a
cooling passage and using the coolant from this passage to cool the
solenoid" and, instead, "use[ s] external plumbing 44, 45 to provide water to
an annular volume 43 outside the body 29 that protects the coil wires." Br.
5. The Examiner addresses Appellant's contention in the Answer by
"disagree[ing], because Longstaff discloses a head (30) with a cooling
passage (part of 43)." Ans. 13.
The Examiner's rejection relies on a finding that Longstaff teaches
providing "cooling fluid from the cooling passage" in the head to the coil
wire. See Final Act. 4 ( citing Tobias only for direct contact between the coil
wire and cooling fluid and only proposing modifying Longstaff' s teachings
to include that direct contact); see also Ans. 13 (affirming that
understanding).
Based on the record before us, the Examiner has failed to establish
sufficiently that Longstaff teaches providing "cooling fluid from the cooling
3 Appellant confirmed this understanding at oral hearing. Tr. 3:5---6.
4
Appeal2017-008452
Application 13/539,930
passage" in the head to the coil wire. Longstaff explains that "[ s ]olenoid
body 29 and valve body 30 define between them an annular volume 43 into
which cooling water is fed by supply pipe 44 and from which water is
withdrawn by outlet pipe 45." Longstaff, 2:30-33. Although the Examiner
finds that supply pipe 44 and outlet pipe 45 are in Longstaff s head, the
Examiner provides no support for that finding. Contrary to the Examiner's
finding, Longstaff shows valve body 30 coupled to cylinder head 11. See
Longstaff, Fig. 1. The Examiner appears to be considering the combination
of valve body 30 and cylinder head 11 as corresponding to the recited
"head." See Final Act. 4 ("a head (of 11, 30)" (sic)). 4
As noted above, Longstaffs valve body 30 is coupled to cylinder head
11. Valve body 30 is not part of cylinder head 11. The Examiner finds that
Longstaff s supply pipe 44 and outlet pipe 45 provide cooling fluid to the
coil wire. Final Act. 4. The claims require, however, that the cooling fluid
provided to the coil wire is that from the coolant passage defined in the
cylinder head (i.e., "the head having a cooling passage defined therein for
passage of a cooling fluid" and "a coil wire in direct contact with the cooling
fluid from the cooling passage"). The Examiner has failed to establish that
Longstaff' s supply pipe 44 and outlet pipe 45 are in communication with a
coolant passage in cylinder head 11.
Accordingly, we do not sustain the Examiner's decision to reject
claims 1, 2, and 7 as unpatentable over Longstaff in combination with the
other references cited in these grounds.
4 It appears this should read "a head ([combination] of 11, 30)."
5
Appeal2017-008452
Application 13/539,930
Bauer Grounds
Similar to the ground based on Longstaff, the Examiner finds that
Bauer teaches the majority of features recited in claim 1, but "fails to
disclose the ... coil having a coil wire in direct contact with the cooling
fluid from the cooling passage." Final Act. 8. The Examiner again finds
that "Tobias ... teaches that it is conventional in the cooled solenoid art, to
have utilized a cooled solenoid (10) with coil wires (25) in direct contact
with a cooling fluid from a cooling passage (27, 28, 30, 15, 20)." Id.
In its Brief, Appellant contends that Bauer "fail[ s] to provide a head
with a cooling passage and using the coolant from this passage to cool the
solenoid." Br. 5. At oral hearing, however, Appellant conceded that Bauer
teaches such an arrangement. Tr. 4: 16-26. Indeed, Bauer explains that
[ s ]olenoid body 29 and valve body 30 define there between a
generally annular volume 43 into which cooling fluid is fed by
a supply line 44 and from which cooling fluid is withdrawn by
discharge line 45. This cooling fluid can be pressurized
lubricating oil supplied by the engine, or can be coolant that is
circulated through the cylinder head 11.
Bauer, 3:30-35.
With respect to the proposed modifications to Bauer's teachings based
on those from Tobias, Appellant does not dispute the actual rationale set
forth by the Examiner. Rather, Appellant contends that Bauer teaches away
from the direct contact between the coil wire and cooling fluid recited in
claim 1 because "Bauer actively seek[ s] to keep the coolant in the annular
volume and avoid contact between coil wires and coolant, as evidenced by
taking steps to prevent it; they use seals to delimit the annular volume."
Br. 5. That is unpersuasive because Appellant has not identified, nor do we
see, any teaching in Bauer to avoid direct contact between the coil wires and
6
Appeal2017-008452
Application 13/539,930
the coolant. A teaching away requires "criticiz[ing], discredit[ing], or
otherwise discourag[ing] the solution claimed." In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Appellant fails to identify such a teaching
away in Bauer.
Appellant additionally contends that "Bauer[' s] ... design maintains
the coils 'at an optimum temperature despite their relative proximity to
combustion chamber"' and "substituting the aerospace design of Tobias into
the automotive design of ... Bauer would require substantial reengineering."
Br. 7. This is also unpersuasive of error because the Examiner does not
propose a substitution, but, rather, a modification to Bauer's solenoid to
have the coil wires exposed to the coolant. Final Act. 8.
Claim 2 depends from claim 1 and recites that "the head is at least
partially formed of a ferromagnetic material, the coil of the electromagnetic
actuator being disposed in the head such that the coil is at least partially
surrounded by the ferromagnetic material such that the ferromagnetic
material forms a flux path for the coil." The Examiner acknowledges that
the combined teachings of Bauer and Tobias fails to teach the recited
arrangement, and finds that "D 'Alpaos ... teaches that it is conventional in
the electromagnetic actuator art, to have utilized a ferromagnetic material
made arm ( 4)." Final Act. 8. The Examiner reasons that "[i]t would have
been obvious ... to have utilized the ferromagnetic material to make a
component of an electromagnetic valve actuation system ... since the use
thereof would provide a more efficient electromagnetic engine valve
actuation system." Id at 7. Appellant responds that "arm 4 [in D' Alpaos]
does not surround the coil, nor is it part of an engine head" and "[t]he prior
art also fails to teach disposing the coil in the head as required by claim 2."
7
Appeal2017-008452
Application 13/539,930
Br. 9--10. In the Answer, the Examiner explains that "arm 4 [in D' Alpaos] is
... at least partially surrounded by the ferromagnetic material made
electromagnets 8" and "the Bauer reference has clearly discloses the coil
(41, 42) of the electromagnetic actuator being disposed in the head (30b)."
Ans. 15-16. We disagree with the Examiner. Oscillating arm 4 in D 'Alpaos
does not surround a coil, nor does Bauer teach coils 41, 42 being disposed in
a head. Accordingly, we do not sustain the Examiner's decision to reject
claim 2.
Claim 7 is directed to a method of operating an intake valve like that
recited in claim 1. 5 Appellant reiterates the arguments presented relative to
claim 1, which are unpersuasive for similar reasons. In addition to simply
reciting normal operation associated with the valve in claim 1, claim 7
recites "using the electromagnetic actuator to open and close the valve
multiple times during the intake period." The Examiner cites Salber as
teaching "it is conventional in the electromagnetic actuator art, to have
utilized an electromagnetic actuator (1) to open and close an intake valve (2)
multiple times during an intake period" and proposes modifying Bauer's
teachings accordingly to "provide a more efficient electromagnetic engine
valve actuation system, to improve an engine performance, via the improved
mixture preparation in the combustion chamber." Final Act. 10. Appellant
does not apprise us of error because Appellant does not dispute the
Examiner's additional finding relative to Sabler or address the Examiner's
rationale in any meaningful way. See Br. 8 (alleging impermissible
5 Although the preamble recites "operating an intake valve," the claim
recites that the "valve disposed in the intake or exhaust passage and operable
to selectively open and close the passage" (i.e., it is actually a method of
operating an intake or exhaust valve).
8
Appeal2017-008452
Application 13/539,930
hindsight, generally, and without explanantion, as well as alleging, without
further explanation, that "one of skill in the art would [not] seek out these
specific references and make the specific combination suggested by the
Examiner").
DECISION
We REVERSE the Examiner's decision to reject claim 1 as
unpatentable over Longstaff and Tobias.
We REVERSE the Examiner's decision to reject claim 2 as
unpatentable over Longstaff, Tobias, and D' Alpaos.
We REVERSE the Examiner's decision to reject claim 7 as
unpatentable over Longstaff, Tobias, and Salber.
We AFFIRM the Examiner's decision to reject claim 1 as
unpatentable over Bauer and Tobias.
We REVERSE the Examiner's decision to reject claim 2 as
unpatentable over Bauer, Tobias, and D' Alpaos.
We AFFIRM the Examiner's decision to reject claim 7 as
unpatentable over Bauer, Tobias, and Salber.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
9